Jury Decides For San Diego Comic-Con In Trademark Suit

San Diego Comic-Con claims trademark on the term "comic con" in legal battle with Salt Lake Comic Con.Doug Kline

(Updated with SDCC statement)

In a ruling with wide-ranging implications for the multi-billion dollar fan events industry, a jury in San Diego today decided in favor of Comic-Con International (CCI), the nonprofit that has run the iconic San Diego Comic-Con for nearly 50 years, in its long-running battle with Dan Farr Productions and Bryan Brandenburg, organizers of Salt Lake City Comic Con, over the use of the term "comic con" (or comic convention) as a descriptor for a pop culture fan event.

The jury decided that the Comic Con mark is valid and that Salt Lake City used it in a way likely to cause confusion to customers.

The case was heard in Federal District Court in San Diego over the past two weeks. The jury had been deliberating since Thursday morning, when both sides concluded their final arguments. SDCC was asking for $12 million in damages, but the jury only awarded $20,000 for corrective advertising because they found the infringement not to be intentional.

In upholding the trademark, the Court ruling allows SDCC to seek licensing agreements with over 140 events in the US that call themselves comic conventions, or else require those events to rebrand.

Comic-Con vs. Comic Con. The case of Comic-Con vs. Comic Con has been seething in the background since 2014, when promotional actions taken by the Salt Lake City convention, including driving a SLCC-branded vehicle through the streets of San Diego during Comic-Con, prompted CCI to issue a stern “cease-and-desist” letter to Dan Farr Productions, claiming they were seeking to deliberately create confusion between the two events.

Farr and Brandenburg protested that the term “comic con” was generic, and that CCI’s trademark applied only to “Comic-Con” (with a hyphen). They pointed to numerous examples of fan events calling themselves comic conventions as evidence that CCI either did not own the mark as they claimed or was so inattentive to enforcement and licensing that they could not legally single out SLCC in this case.

As evidence, they cited examples of use of the term “comic con” to describe events that took place prior to the first San Diego event in 1970, and a case where CCI had withdrawn its application for a trademark on the term “Comic Con” (no hyphen) in the early 2000s.

Opinion in the event industry was frankly divided on the subject, with some organizers such as Informa (which runs Boston Comic Con in addition to other shows like FanExpo) and Left Field Media (Rose City Comic Con) opting to enter into license agreements with CCI, and others having no formal relationship. Most fan festivals avoid the issue entirely by using different branding, as in Atlanta’s DragonCon or Charlotte’s Heroes Con. At the trial, CCI’s attorney Callie Bjurstrom observed that SLCC could have avoided legal action by taking this course.

‘David vs. Goliath?’ Farr and Brandenburg also saw advantages in taking their case public, rallying fans to the idea that “comic con” belongs to everyone, not one particular institution. They ran a coordinated campaign on social media including promoted Facebook posts, marshalling an online army of supporters to comment, upvote and retweet their position and paint themselves as altruistic “Davids” standing up to the “Goliath” of SDCC, which is seen by some as the embodiment of commercialism and Hollywood hype.

It was disclosed in court proceedings that the two organizers voted themselves bonuses of $225,000 each as they were mounting a crowdfunding campaign to get fans to pony up for their legal defense. However, the comment threads on SLCC’s posted content indicated that the tactics were effective in mobilizing fan anger.

“Comic-Con is a Brand.” CCI, meanwhile, saved its best lines for the court. They asserted that Comic-Con was a brand recognized to apply exclusively to the San Diego show, and offered in evidence a survey showing that more than 70% of respondents agreed. The validity of the survey was called into question by SLCC attorneys during the trial but the jury appeared to accept it as proof.

“This is a brand that we must protect from these defendants and anyone else who seeks to exploit or hijack it,” Bjurstrom said.

SDCC's lawyers also asserted the defendants knew this to be the case when they launched their own event, an assertion the jury apparently rejected in their deliberations regarding damages. In filings seeking summary judgment, Comic-Con produced emails and public statements by Farr and Brandenburg boasting of how they sought to “hijack” the media notoriety of SDCC to boost their own event, and settled on the name “comic con” expressly to leverage fan enthusiasm around the festival that draws upwards of 140,000 to San Diego each July and generates billions of media impressions and coverage during its 4-day run.

These indiscretions made SLCC a soft target for CCI to pursue trademark enforcement. As SLCC points out, there are dozens of events around the US calling themselves some variation of “Comic Con,” including several large independent shows in Phoenix and Denver, and, significantly, the 180,000+ New York Comic Con and 80,000+ Emerald City ComiCon, both run by events promoter ReedPop. With the trademark now officially upheld in Federal Court as a result of the action taken against SLCC, all of them will now potentially need to obtain license from CCI to use the term, or else rename their events.

The SLCC organizers pledged to appeal the decision prior to the verdict.

"San Diego Comic Convention has used the Comic-Con trademarks in connection with our comics and popular arts conventions for almost 50 years. We have invested substantial time, talent and resources in our brand resulting in world-wide recognition of the Comic-Con convention held annually in San Diego. The jury today upheld all of San Diego Comic Convention's trademarks as valid. The jury also found that Dan Farr Productions, Daniel Farr and Bryan Brandenburg each infringed all of San Diego Comic Convention's marks. San Diego Comic Convention respects the decision of the jury. From the beginning all that we asked of the defendants was to stop using our Comic-Con trademarks. Today we obtained a verdict that will allow us to achieve this. For that we are grateful."

I am an author, consultant and educator with a professional interest in the business implications of new media and a personal passion for comics and visual communication. My 2012 book Comic-Con and the Business of Pop Culture (McGraw-Hill) looks at trends in entertainment, ...